DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,361,020. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially similar in scope and they use similar limitations to produce the same end result of recording in a second distributed database accessible to each of the plurality of content provider systems, information indicating that the requesting entity accessed the user data from the determined one storage locations.
It would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify or to omit the additional elements of claims 1-16 of US Patent No. 12,361,020 to arrive at the limitations of claims 1-20 of the instant application because one would realize that the remaining elements would perform the same functions as before.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101. They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8 & 10-19 is/are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Dai et al. (US Pub. No. 2016/0189214 A1).
In respect to Claim 1, Dai teaches:
a method comprising: storing, at a first content provider system of a plurality of content provider systems, user data associated with at least one user of the first content provider system, wherein other user data associated with the at least one user is stored on one or more other content provider systems of the plurality of content provider systems; (Dai teaches [FIG. 1] an environment with a plurality of content provider systems with associated user data.)
receiving, by the first content provider system and from a requesting entity, a request for user data associated with the at least one user; (Dai teaches [0040] capturing user data at multiple content provider systems.)
based on receiving the request, querying, by the first content provider system, a first distributed database to determine, for the at least one user, one or more storage locations on the plurality of content provider systems at which user data associated with the at least one user is stored, wherein the first distributed database comprises information identifying the one or more storage locations on the plurality of content provider systems at which user data associated with the at least one user is stored, and wherein the first distributed database is accessible to each of the plurality of content provider systems; (Dai teaches [0040] a request to receive user information from the content provider. Dai teaches [0053] determination of storage locations of user data.)
and recording, by the first content provider system, in a second distributed database accessible to each of the plurality of content provider systems, information indicating that the requesting entity accessed the user data from the determined one or more storage locations (Dai teaches [0055-0056] indicia that user data has been accessed from the storage location.)
As per Claim 2, Dai teaches:
retrieving user data associated with the at least one user from the determined one or more storage locations on the plurality of content provider systems; and facilitating access, by the requesting entity, to the user data retrieved from the determined one or more storage locations (Dai teaches [0053] retrieval of storage locations in a content provider system.)
As per Claim 3, Dai teaches:
wherein the first distributed database further comprises, for the at least one user, a master public key configured to identify the user on each of the plurality of content provider systems (Dai illustrates [FIG. 2] the primary components required in the claim limitations, namely a first distributed database, a master public key, and storage on the content provider system. Dai teaches [FIG. 2] a user data store [360] wherein this data store is a first distributed database which comprises profile and content provider information. Dai teaches [0041] user profile data [370], wherein the user profile data constitutes a master public key which grants access based upon said profile information. Dai also teaches [FIG. 2] a content provider system [140] associated with the first distributed database.)
As per Claim 4, Dai teaches:
wherein the second distributed database comprises, for the at least one user, access rights data identifying one or more entities authorized to access user data associated with the at least one user, and data that records accesses of the user data associated with the at least one user by the one or more entities (Dai illustrates [FIG. 2] an advertisement data store [420] wherein this data store represents a second distributed database. Dai further teaches [FIG. 2] for each user device, identification of user data which is accessible based upon the data received from profile system [300], wherein this user data is recorded with the framework of the profile system [300].)
As per Claim 5, Dai teaches:
in response to the request from the requesting entity for user data associated with the at least one user, querying the second distributed database to determine whether the user data associated with the at least one user is accessible to the requesting entity (Dai illustrates [FIG. 2] an advertisement data store [420] wherein this data store represents a second distributed database. Dai further teaches [FIG. 2] for each user device, identification of user data which is accessible based upon the data received from profile system [300], wherein this user data is recorded with the framework of the profile system [300].)
As per Claim 6, Dai teaches:
wherein the at least one user is also a user of the other content provider systems of the plurality of content provider systems (Dai [0054])
As per Claim 7, Dai teaches:
wherein a copy of the first distributed database and a copy of the second distributed database are stored on each of the plurality of content provider systems (Dai [0053])
As per Claim 8, Dai teaches:
wherein each of the plurality of content provider systems comprises one or more of: a cable television system, an internet service system, or a Web content system (Dai [0056])
Claims 10-14 are the media claims corresponding to method claims 1-2 & 4-6 respectively, therefore are rejected for the same reasons noted previously.
Claims 15-19 are the system claims corresponding to method claims 1-2 & 4-6 respectively, therefore are rejected for the same reasons noted previously.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 9 & 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dai in view of Castinado et al. (US Pub. No. 2017/0078299 A1).
As per Claim 9, Dai does not explicitly disclose:
wherein the first distributed database comprises a distributed hash table, and wherein the second distributed database comprises a block chain
However, Castinado teaches:
wherein the first distributed database comprises a distributed hash table, and wherein the second distributed database comprises a block chain (Castinado teaches [0027] a block chain may represent the distributed database.)
It would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to incorporate the teachings of Castinado into the system of Dai. One of ordinary skill in the art would be motivated to provide a system that has a growing list of data records to be hardened against tampering and revision by ensuring through a block chain protection against an attack that could possibly disable a centralized database.
Claim 20 is the method claim corresponding to method claim 9, therefore are rejected for the same reasons noted above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA BULLOCK whose telephone number is (571)270-1395. The examiner can normally be reached 8:00 am - 4:00 pm.
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/JOSHUA BULLOCK/Primary Examiner, Art Unit 2153 August 17, 2026
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